PTAB

IPR2019-01661

Red Diamond Inc v. Southern Visions LLP

Log In

1. Case Identification

2. Patent Overview

  • Title: TEA BREWING AND SWEETENING PRODUCT AND PROCESS
  • Brief Description: The ’222 patent is directed to a product and process for brewing sweet tea by combining tea particles and sugar granules of a specific, defined size (U.S. mesh sieve nos. 3-35) together in a single water-permeable mesh pouch.

3. Grounds for Unpatentability

Ground 1: Claims 1, 6, and 12 are anticipated by or obvious over Cooper, optionally in view of Graves, as informed by The Sucrose Guide.

  • Prior Art Relied Upon: Cooper (Patent 5,895,672), Graves (Patent 3,914,439), and The Sucrose Guide (a 1990 user's guide to sucrose).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this ground under two alternative claim constructions. Under an "open-ended" construction (where only some sugar must be in the claimed range), Cooper allegedly anticipated the claims. Cooper taught combining tea and a sweetener like "commercial grade granulated sugar" in a permeable pouch. Petitioner asserted, via expert testimony and The Sucrose Guide, that such sugar inherently contains a significant percentage of granules within the claimed 3-35 mesh size range. Under Petitioner’s proposed "exclusive" construction (where all sugar must be in the range), the combination with Graves rendered the claims obvious.
    • Motivation to Combine (for §103 grounds): Under the "exclusive" construction, a person of ordinary skill in the art (POSITA) would modify Cooper’s product with the teachings of Graves. Graves taught that for flavored tea bags, a preferred sugar particle size is between 30 and 50 mesh and that very small sugar crystals are ineffective. This would have motivated a POSITA to select only sugar particles within the claimed 3-35 mesh range for use in Cooper’s combined tea-and-sugar pouch to ensure effective sweetening and prevent loss of fine particles.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Cooper taught that any sweetener that readily dissolves could be used, and testing showed that commercial-grade sugar (containing particles in the claimed range) is fully functional in Cooper’s invention.

Ground 2: Claims 13, 19, and 23 are obvious over Vitous in view of Cooper and/or Graves, as informed by The Sucrose Guide.

  • Prior Art Relied Upon: Vitous (Patent 5,245,914), Cooper (Patent 5,895,672), Graves (Patent 3,914,439), and The Sucrose Guide.

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed the system and method claims, which added limitations related to a commercial brewing machine (e.g., removable brewing basket, brewing urn, hot/cold water dispensers). Petitioner asserted that Vitous disclosed these conventional brewing system components, which the ’222 patent itself acknowledged as prior art. The core invention of the tea-and-sugar pouch was argued to be obvious for the same reasons as in Ground 1, relying on Cooper (for the pouch concept) and Graves (for the specific sugar sizing).
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to use the pre-packaged tea-and-sugar pouch taught by Cooper (as modified by Graves) within the standard commercial tea brewing machine taught by Vitous. The motivation was to achieve the known benefits of both technologies: the convenience and consistency of a pre-portioned pouch and the efficiency of an automated commercial brewer.
    • Expectation of Success (for §103 grounds): Success was expected because Cooper’s tea extraction containers were intended for use in brewing devices like the one disclosed in Vitous.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) that substituted the Australian '497 Application (AU 2011100497) for Cooper as a primary reference. The AU '497 application disclosed combining tea with sweeteners like white sugar or rock sugar in a tea bag. Petitioner argued this reference, in combination with Cooper (for brewing chamber details) and/or Graves (for sugar sizing), rendered all challenged claims obvious under similar rationales.

4. Key Claim Construction Positions

  • The petition centered on the construction of the phrase “wherein the size of said sugar granules is in the range of U.S. mesh sieve nos. 3-35.”
  • Petitioner’s Proposed Construction: The phrase should be construed to mean the sugar granules must be exclusively within the 3-35 mesh range.
  • Justification: Petitioner argued that during prosecution, the patentee repeatedly and emphatically distinguished the invention from prior art (specifically, common grocery store sugar) based on this "critical" size range to overcome rejections. The patentee submitted Rule 132 declarations with test data from sugar samples that had been sieved to remove all particles outside the claimed range. Petitioner contended these actions constituted a clear and unmistakable disclaimer, surrendering any claim to compositions containing a mix of sugar sizes (i.e., blends with particles both inside and outside the 3-35 mesh range).

5. Key Technical Contentions (Beyond Claim Construction)

  • Actual Size of Commercial Sugar: A central technical argument was that the patentee misled the examiner regarding the particle size of standard "commercial grade grocery store sugar" (EFG sugar). The patentee characterized EFG sugar as being in the 40-60 mesh range, entirely outside the claimed 3-35 mesh range. Petitioner provided expert testimony and evidence (The Sucrose Guide) to show that EFG sugar, in fact, contains a significant percentage of particles within the claimed 3-35 mesh range. This alleged misrepresentation was critical to the patentee overcoming an obviousness rejection over prior art that taught using commercial sugar.

6. Relief Requested

  • Petitioner requested the Board institute an inter partes review and declare that claims 1, 6, 12, 13, 19, and 23 of the ’222 patent are unpatentable.